No Man (or Government Entity) is Above the Law

The United States Court of Appeals for the Federal Circuit recently released a combined opinion regarding the ability of government entities to register their official seal. The decision of In Re: City of Houston serves as a reminder of the substantial differences between Canadian and American trade-mark law.

The opinion related to two cases in which the Director of the United States Patent and Trade-mark Office declined to register an official seal. The refusal was based on §2(b) (15 U.S.C. §1052) of the Lanham Act, which prevents applicants from registering a trade-mark that “consists of or comprises the flag, coat of arms or other insignia of the United States, or of any State or municipality or of any foreign nation or any simulation thereof.” Both seals represent evocative images of the state – the District of Columbia depicting Lady Justice laying a wreath on the statute of George Washington; the City of Houston, a lone star shining over a train and a plow.

The parties advanced different arguments in their respective appeals. The City of Houston suggested that because it was a government entity attempting to register its own seal, §2(b) did not apply. It was argued that on the basis of public policy and the Act’s legislative history that an “applicant” did not refer to a government entity attempting to register its seal. Specifically it was alleged that this legislation was introduced in order to protect trade-marks from “cheats and pirates.” However, through an examination of the plain language and statutory interpretation, the court concluded that to allow this exception would be inappropriate.

Conversely, the District of Columbia suggested that the court’s interpretation of §2(b) contravened the international obligations of the United States. Specifically, Article 6quinquies of the Paris Convention which states, “[t]he countries of the Union agree to refuse or to invalidate the registration and to prohibit by appropriate measure the use, without authorization by the competent authorities, either as trade-marks or as elements of trade-marks, of armorial bearing, flags, and other State emblems, of the countries of the Union.”

It is apparent that a governmental seal would fall under State emblems; however, according to the court it is also clear that “the Union” does not refer to the union of the United States, but the Union of countries which have joined the Paris Convention. Thus, as a municipality the District of Columbia was not considered to fall under the protection of this international provision.

This refusal to grant a trade-mark registration implies that if another entity were to use this insignia, there would be greater difficulty in obtaining recourse within the American trade-mark regime. Comparatively, section 9 of the Canadian Trade-marks Act offers negative protection to what it deems to be “public marks”, such that a business would not be able to use the mark of a “public authority.”

Canada’s test for the registering public marks resides in section 9(1)(n)(iii), which states that, “[n]o person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… adopted and used by any public authority, in Canada as an official mark for wares or services.” Similarly, section 12(e) of the Act prevents registration of any mark, “of which the adoption is prohibited by section 9 or 10.”

The three-part test for what constitutes a public authority for the purposes of this section was determined in Registrar of Trade Marks v Canadian Olympic Association.1 This test requires that the entity: (1) have a duty to the public; (2) have a degree of public control; (3) must only benefit the public. As government entities its appears prima facie that both the City of Houston and the District of Columbia would have passed all three components of a public authority test and be granted this “official mark” according to Canadian law. As such, this section would have been afforded protection for an official seal, thereby protecting the public from “pirates and cheats” as the City of Houston argued section §2(b) was intended to do.

The similarities between Canadian and American intellectual property law often lead to assumptions that there will be identical court outcomes in either jurisdiction. This decision, while narrow in its scope, demonstrates that this is not always the case. When it comes to registering a trade-mark, the American Government is just another applicant.

Naomi Metcalfe is an IPilogue Editor and a JD Candidate at Western University.

1  Registrar of Trade Marks v Canadian Olympic Association (1982), 67 CPR (2d) 59 (FCA).

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